The “Enhanced European Patent” or some long-waited-for answers on the Unified Patent Court and the Unitary Patent by the Select and Preparatory Committees.

The Unified Patent Court Preparatory Committee and Select Committee recently released an explanatory note on the “Enhanced European Patent System” detailing the purpose of the future Unified Patent Court and Unitary Patent and the key points on how this major patent reform will articulate itself with the existing European and National patents and existing jurisdictions.

 

The UPC Blog has extensively posted on the Unified Patent Court competence and procedure, on the nature of the unitary effect and the general overview and background of both the UPC (Unified Patent Court) and the UP (Unitary Patent). It is however the first time that the committees (see our posts on the Select committee and the Preparatory Committee) involved in the setting up of the UPC release an explanatory note.  It is thus the first time that clarifications rather than interpretations are made about the UPC agreement. This post will focus on three key points of the UPC explanatory note, which bring some explanations to the cacophony of information published so far, without nonetheless answering all the questions.

 

Before looking at these three substantial points, it is important to start with the reassertion from the Select and Preparatory Committees that the Unitary Patent directly derives entirely from the European patent, which provides the shell onto which the unitary effect hooks up. So to obtain a Unitary patent an applicant must first apply for a European patent at the European Patent Organisation, which will handle the application in accordance with the European Convention. It is only after grant that the proprietor of a European patent will have the opportunity to apply for unitary effect.  However if for a European patent it is necessary for the patent holder to validate the patent in each Member state where protection is required, for a unitary patent a single request will give protection in 25 Member States of the European union. (More information on the unitary effect here)

 

The rest of the explanatory note is divided between the UPC and UP, and deals with important questions such as the geographical extension, the general competence of the UPC and the transitional period. The UPC Blog by Lavoix raised in previous posts the problems of legal uncertainty attached to these three topics, we will thus look here at the response of the Select and preparatory Committees. (See Discussion posts on “Opt-out and legal certainty” “The impact of Article 83 UPCA on the applicable law” and “UPC and Infringement actions”)

 

The Geographical extension of the Unitary Patent:

The unitary effect of a European patent will cover the territories of the contracting member states that have ratified the UPC Agreement at the date of the registration of the unitary effect of the individual patent. The explanatory note however makes clear that the geographical perimeter of validity of the unitary effect will not extend following the progressive ratification of the UPC Agreement after the registration. Rather, it will stay the same until all the contracting member states ratify the UPC Agreement. It is only then that European patents registered thereafter will enjoy unitary effect in all participating member states. As for Spain, Italy and Croatia which are not participating in the UP and Poland which is participating but has not signed yet the UPC Agreement, it will be possible for the proprietor of a European patent with unitary effect to choose to validate the patent as a classical European patent.  In addition, it will also be possible to validate the same patent as a European Patent in the ten contracting states of the European Patent Organisation that are not EU Member States. (For more information on the contracting member states and Italy and Spain’s positions).

 

The UPC general competence:

On the general competence of the UPC, the explanatory note makes clear that the UPC has exclusive competence “in respect of civil litigation on matters relating to classical European patents, European patents with unitary effect, supplementary protection certificates issued for a product covered by such a patent and European patent applications”. The UPC will not however have any competence for national patents or supplementary protection certificates granted for a national patent (see our post on supplementary protection patents).

The UPC’s rulings will have effect in the territory of the contracting member states that will have ratified the UPC Agreement.  The exclusive competence of the UPC will also apply to the decisions of the European Patent Office in “carrying out the tasks of administering the Unitary patent set out in the Unitary patent regulations”.

 

The Transitional period: (For background information on the transitional period see here) 

The UPC Agreement provides for European patents a period of seven years, renewable for another seven years, during which they will co-exist with UP’s. However, as it is made clear in the explanatory note, the transitional rules will not apply for European Patents with unitary effect.  The transitional period will only apply to European patents or Supplementary Protection Certificates issued for products protected by European patents. For those European patents, the competent forum during the transitional period will be either the UPC or the existing national courts. So unless an action has already been brought before the UPC, actions for infringement or for revocation concerning European patents or for a Supplementary Protection Certificate issued for a product protected by a European patent may thus still be brought before national courts.

 

The Opt-out is, too, detailed and explained. Hence, “during the transitional period, a proprietor –or an applicant for- a European patent granted or applied for prior to the end of the transitional period or a SPC issued for a product protected by such a patent will also have the possibility to opt out the patent/application/SPC, from the jurisdiction of the UPC unless an action has already been brought before the UPC. To this end they shall notify their opt-out to the Registry. The opt-out shall take effect upon its entry into register. It will be possible to withdraw such an opt-out at any time. There will be no possibility to opt-out European patents with unitary effect.”  In respect of the opt-out the Select and Preparatory Committees list three benefits of the UPC justifying not opting-out: “a unified jurisprudence resulting in increased predictability and the avoidance of panel litigation; judgments (injunctions, damages) with effect in 25 Member states of the EU; the expectation of speedier procedures than in many of the individual Member States”.

 

It is important to observe however that this explanatory note does not answer central questions such as the possible dual competence between the UPC and national jurisdiction under articles 32 (1) and 83 (1) of the UPC Agreement, the types of actions that would stop a patent proprietor to opt-out or the risk of lis pendens. The UPC Blog will deal with each of these issues in posts to come.

 

You can of course look at the UPCA here and the draft rules of procedures here.

 

Sweden and Belgium have ratified the Unified Patent Court Agreement!

Protocol to the Agreement on a Unified Patent Court on provisional application

June has seen two new ratifications of the Unified Patent court Agreement by Sweden and Belgium, respectively on 05th and 06th June 2014.

Sweden had already announced earlier this year that it will form a regional division of the UPC together with Lithuania, Latvia and Estonia, which explains this quick ratification. The Nordic-Baltic court will operate in english only.

You can find a summary of the ratification progress here and on the site of the European Commission, as well as a map of the countries which have already ratified here.

Danes vote “Yes” for the UPC!

Encouraging steps by participating member states towards the entry into force of the UPC Agreement

On Sunday 25th May, Denmark voted in favour of joining the Unified Patent Court in a referendum that took place along the European elections. 62.55% of Danes voted “yes” against 37.45% of “No”, out of a total 2,303,178 voters or 54% of the population. (source: Election Guide)

 

Denmark is one of five EU nations to have an opt-out clause on justice and home affairs. Hence, to be part of the UPC, the Danish government needed either an 80 percent backing in parliament or the majority in a referendum. The Danish People’s Party and the Red-Green Alliance however had indicated they did not support the proposal, which triggered the referendum.

Denmark now needs to ratify the UPC Agreement.

 

European internal market and services commissioner Michel Barnier welcomed the results:

“The approval of the Agreement on the Unified Patent Court by Danish voters gives a very positive signal to all signatories and should encourage them to ratify without any further delay. As a first specialized court common to the Member States in the patent litigation area, the Court will open a new chapter in the history of both the patent system and judicial cooperation in the EU.” (source: European Commission)

Unitary Patent ratification process maps

EU Map

 

Map indicating the countries which participated in the enhanced cooperation on the UPC:

Orange: Countries which participated in the enhanced cooperation on the unitary patent protection Yellow: Countries which did not participate in the enhanced cooperation on the unitary patent protection
Orange: Countries which participated in the enhanced cooperation on the unitary patent protection
Yellow: Countries which did not participate in the enhanced cooperation on the unitary patent protection

 

 

Map of the UPC Agreement Signatory States:

Pink: Countries which signed the Agreement on a Unified Patent Court on 19/02/2013 (except Bulgaria which signed on 05/03/2013) Yellow: Countries which did not sign the Agreement on a Unified Patent Court
Pink: Countries which signed the Agreement on a Unified Patent Court on 19/02/2013 (except Bulgaria which signed on 05/03/2013)
Yellow: Countries which did not sign the Agreement on a Unified Patent Court

 

 Map indicating the countries which have already ratified the UPC Agreement: 

 

Red Rectangles: Member States which have ratified the UPC Agreement Austria: 06/08/2013 France: 14/03/2014 Sweden: 05/06/2014 Belgium: 06/06/2014 Denmark: 20/06/2014 Malta: 09/12/2014 Luxemburg: 22/05/2015
Red Rectangles: Member States which have ratified the UPC Agreement
Austria: 06/08/2013
France: 14/03/2014
Sweden: 05/06/2014
Belgium: 06/06/2014
Denmark: 20/06/2014
Malta: 09/12/2014
Luxemburg: 22/05/2015

Source: Council of the European Union

 

 

 

 

 

 

 

Unitary Patent ratification process table.

Unitary patent – ratification progress

Member State Participation in the enhanced cooperation on the unitary patent protection Signature of the Agreement on a Unified Patent Court Ratification of the Agreement on a Unified Patent Court
AT Austria  Yes 19.02.2013 
06.08.2013
BE Belgium  Yes 19.02.2013 
06.06.2014
BG Bulgaria  Yes 05.03.2013 
HR Croatia  No  No
CZ Czech Republic  Yes 19.02.2013 
CY Cyprus  Yes 19.02.2013 
DE Germany  Yes 19.02.2013 
DK Denmark  Yes 19.02.2013 
 20.06.2014
EE Estonia  Yes 19.02.2013 
GR Greece  Yes 19.02.2013 
FI Finland  Yes 19.02.2013 
 19.01.2016
FR France  Yes 19.02.2013 
 14.04.2014
HU Hungary  Yes 19.02.2013 
IE Ireland  Yes 19.02.2013 
IT Italy  Yes 19.02.2013 
LV Latvia  Yes 19.02.2013 
LT Lithuania  Yes 19.02.2013 
LU Luxembourg  Yes 19.02.2013 
 22.05.2015
MT Malta  Yes 19.02.2013 
 09.12.2014
NL The Netherlands  Yes 19.02.2013 
PL Poland  Yes  No
PT Portugal  Yes 19.02.2013 
 28.08.2015
RO Romania  Yes 19.02.2013 
SK Slovakia Yes 19.02.2013 
SI Slovenia  Yes 19.02.2013 
ES Spain  No  No
SE Sweden  Yes 19.02.2013 
 05.06.2014
UK United Kingdom  Yes 19.02.2013 

Source: Council of the European Union

Portugal: The Portugese Parliament passed on 10/04/2015 a passed a motion brought by the Council of Ministers to approve the Agreement on a Unified Patent Court. The ratification will however only be finalised after the presidential assent will be proclaimed by decree. Portugal will then need to deposit its instrument of ratification in Brussels for it to be effective. Moreover, according to Bristows UPCthe Commission for Foreign Affairs and Portuguese Communities, which studied the motion before it was voted by the full Assembly, highlighted the need for Portugal to establish a local division of the UPC, although the government has not yet formally expressed a view on the subject, and it was generally thought previously that Portugal would not set up a local division.

The United Kingdom’s ratification process of the Unified Patent Court…nearly there!

Encouraging steps by participating member states towards the entry into force of the UPC Agreement

Last week, on 14th May, the Intellectual Property Act 2014 enabling the Secretary of State to make arrangements to establish the Unified Patent Court in the UK (See section 17 of the Act) was given the Royal Assent.

 

The Bill had been initiated by the House of Lords, which approved it in July 2013, followed by the House of Commons in March 2014.

 

It is now expected that the IP Act’s provisions will start to come into force from 1 October 2014, with all measures implemented by late 2015.

 

This new step towards the ratification of the Unified Patent Court Agreement is especially important as the United Kingdom is one of the three countries, with France and German, which must ratify the UPC Agreement for it to come into effect.

The Preparatory Committee

 Who is the Preparatory Committee and what is its function?

The Preparatory Committee is composed of all the Signatory States to the Unified Patent Court Agreement document 16351/12, of 11.01.2013. Poland, the European Commission and the EPO have observer status. Its objective is to prepare for the establishment of the UPC in order for it to be operational once the UPC Agreement enters into force. The Preparatory Committee will exist until the Court is established. Currently this is expected to last two years and during this time it has its own rules by which it is governed. You can find the rules here. Its work programme is set out in a Roadmap.

The Preparatory Committee has identified five major work streams; Legal Framework, Financial Aspects, Human Resources/Training, IT and Facilities. Each work stream has been assigned to a specific working group which have been given the task of preparing proposals to the Committee where all decisions are taken.

The Preparatory Committee is chaired by Mr Alexander Ramsay -from Sweden who is assisted by the vice-Chairman, Louise Akerblom -from Luxembourg- and the Head of Secretariat Eileen Tottie -from the United Kingdom.

 

 

EU Legislation and Unitary Patent

 Which EU legislation provides for Unitary protection?

The European patent with unitary effect relies upon three separate pieces of legislation (unitary patent, language regime and unified patent court).

 

More related EU legislation can be found in the Sources pages.

The Transitional Period and the Opt-out

Supplementary Protection Certificate

 

I. The transitional period:

The UPC Agreement provides for a transitional period of seven years, which may be prolonged up to a further seven years by the Administrative Committee on the basis of a broad consultation with the users of the patent system and an opinion of the Court.

During the transitional period the following options will be possible regarding European patents without unitary effect:

 

  • · A proprietor of – or an applicant for – a European patent granted or applied for prior to the end of the transitional period will have the possibility to opt out the patent/application, unless an action has already been brought before the UPC. To this end they shall notify their opt-out to the Registry. The opt-out shall take effect upon its entry into the register. It will be possible to withdraw such an opt-out at any time as stated in Article 83.3 of the UPC Agreement

 

There will be no possibility to opt-out a European patent with unitary effect.

 

 

II. The Opt-out system in details:

 

(A) The opt-out system and its relationship with the European Patent and the European Patent with Unitary Effect:

  • The Opt-out and the European bundled patent:

Pursuant to Article 83.3 of the UPC Agreement the possibility to opt out concerns a European patent granted or applied for before the end of the transitional period. That means that the opt-out once notified and registered takes effect for the entire European bundled patent for all Contracting Member States where this patent has been validated. There is no need to notify the opt-out separately for the relevant Contracting Member States.

  • The unity of application and the Opt-out system:

The unity of an application and of the patent, in case of several applicants or several proprietors, is a basic principle of patent law as reflected in particular in Article 118 of the European Patent Convention. This means that applicants or proprietors of one single application for a European patent or one single European patent will have to act in common to exercise the opt-out.

  • The Opt-out and the UPC’s jurisdiction:

Once an opt-out has been notified and registered the UPC does not have any jurisdiction any more with respect to the European patent or the application for the European patent concerned. The patent or application will be subject only to the jurisdiction of the competent national courts.

  • The Opt-out system, the European patent and the European patent with unitary effect:

If an opt-out has been notified and registered with respect for an application for a European patent, the opt-out continues to apply to the relevant European patent, once granted. An opt-out once notified and registered normally remains in force for the entire life-time of a European patent, unless the proprietor withdraws the opt-out pursuant to Article 83.4 of the UPC-agreement.

 

(B) Registration of Opt-out by the UPC’s Registry:

  1. Opting-out fee:

The Contracting Member States in the Preparatory Committee have not yet decided if there will be an opting-out fee.

       2.Registration of the opt-out:

In the interest of legal certainty for both the proprietor or applicant and third parties, it will indeed be important that the opt-out is entered into the Registry and becomes effective on the day the notification of the opt-out is received by the Registry. The Contracting Member States and the Preparatory Committee do still have to look into the necessary arrangements to achieve this.

 

(C) Opt-out and the choice of forum during the transitional period:

Pursuant to Article 83.1 of the UPC Agreement during an initial period of seven years after the entry into force of the UPC Agreement any proprietor of a European patent or any applicant can initiate proceedings, in particular infringement proceedings, before national courts, regardless of whether the European patent or application concerned has been the subject of an opt-out.

But will it be possible to initiate a revocation action in the UPC if someone else has already initiated an infringement action before the national courts? It will normally be possible for a party to initiate a revocation action before the UPC even if the proprietor of the European patent has initiated an infringement action before a national court. If the proprietor of the European patent wants to avoid a revocation action before the UPC he needs to make use of the possibility to opt-out from the jurisdiction of the UPC.